Trademarks as Assets: Protection in the United States

In this series, we will discuss how to obtain and maintain a valuable trademark portfolio, both domestically and internationally. Up first: United States trademark registration and its benefits.

The Dual Nature of Trademark Rights in the United States

In the United States, the moment a company uses a distinctive mark in commerce, it establishes “common law” trademark rights. These rights are inherently limited, as they are geographically restricted to the area where the mark is used and known. While common law rights do offer some level of protection, they are diffuse and can be challenging to enforce. The scope of protection is often uncertain, creating the opportunity for costly legal disputes.

Federal registration of a trademark with the United States Patent and Trademark Office (USPTO), on the other hand, confers several advantages. It grants the owner a presumption of nationwide exclusivity in the use of the mark, significantly enhancing the ability to protect and leverage the trademark as an asset. Federal registration serves as a public notice of the registrant’s claim of ownership, which can be a powerful deterrent to potential infringers, like competitors seeking to “cozy up” to hard-fought goodwill or even bad actors seeking to impersonate a company for nefarious purposes.

Benefits of Federal Registration

The benefits of federal trademark registration are numerous and varied, particularly for large enterprises operating across state lines and international borders. A federally registered trademark allows for:

• Nationwide Priority: Once registered, a trademark enjoys a presumption of nationwide use, which is invaluable for companies expanding into new geographic markets.
• Enhanced Remedies: Federal registration enables access to statutory damages, treble damages, and attorneys’ fees in infringement cases, serving as a deterrent against unauthorized use.
• Basis for International Registration: It can serve as a basis for securing trademark protection in other countries, facilitating global brand expansion and protection.
• Customs Protection: A registered trademark can be recorded with U.S. Customs and Border Protection to prevent the importation of infringing foreign goods.
• Potential Incontestability: Owners of trademark registrations on the Principal Register can claim incontestability after five years of continuous use. This means that various aspects of the registration — including the trademark’s validity — cannot be challenged by third parties.

The Strategic Importance of Trademarks

Building and maintaining a robust trademark portfolio is not just about legal compliance; it’s a strategic business initiative. It involves a thorough audit of preexisting trademarks, an assessment of the market, and a forward-looking approach to brand development. The portfolio should be dynamic, evolving with the company’s business strategy and the ever-changing market.

In-house legal departments and business contacts can — with the help of outside counsel — play a pivotal role in this process. Companies should ensure that every source identifier — the company’s name, product names, and logos — is properly vetted, registered, and monitored. They should also be vigilant in enforcing trademark rights, which includes challenging infringing uses and defending against claims of infringement.

What This Means for You

Trademarks are indispensable assets for companies of all sizes. They are the legal embodiment of a company’s brand and carry with them the weight of the company’s reputation and goodwill. In the United States, while common law rights provide basic protection, federal registration offers a more robust and enforceable level of security. The strategic management of a trademark portfolio is not just a legal task — it’s an imperative that supports the company’s broader business objectives.

In the subsequent parts of this series, we will delve deeper into the strategies for obtaining and maintaining a valuable trademark portfolio, both domestically and internationally. We will explore the intricacies of trademark selection, the registration process, portfolio management, and the critical role of monitoring and enforcement in safeguarding these vital assets.

Vinson & Elkins assists clients in all things trademark — from prosecution and maintenance of domestic and international trademark portfolios to trademark-related disputes before the USPTO, in court, and before arbitration panels.